USPTO Patents Application 10810775

Amendments to the Drawings:

The attached drawing sheet replaces the single drawing sheet in the application. The
drawing sheet has been amended to show that the drawing is prior art.

Attachment: Replacement Sheet

Annotated Sheet Showing Changes

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REMARKS

Claim Objections and Section 112 Rejection

Applicant has corrected the spelling of "shaft" in Claim 1 and has corrected the
abbreviation "MB 2 -z" in Claim 2.

Claim Rejections - 35 USC 103
Examiner rejected all claims as being unpatentable over Mustonen in view of Donaldson
or unpatentable over Mustonen and Donaldson in view of various other references.
Applicants request reconsideration.

Applicants have amended the independent claims to make clear that all claims are limited
to underwater cutting and underwater welding. All of Examiners rejections are based on
the combination of the teachings of Mustonen and Donaldson. Applicants submit that
there is no suggestion in the prior art to combine these two references.

Mustonen

There is nothing in Mustonen to suggest an electrode of the type described in Donaldson.
The only electrode material specifically referred to in Mustonen are "tungsten based
materials" (col 2, line 9). Mustonen does state generally that the electrode could be a
"consumable electrode or more preferably a non-consumable" (col 2, line 7). As
explained in the Background Section of the present application, Applicants stated that
aluminum, copper and tungsten electrodes were found to be unsatisfactory and that
graphite had been found to be a satisfactory material and that it had been used
successfully. Tungsten was found to be generally unsatisfactory because low melting
point inter-metallic compounds are formed with the metal being cut that erodes the
electrode".

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Donaldson

There is nothing in Donaldson that suggest that the electrode material described therein
would be useful for underwater cutting and welding. Donaldson does state (col 2, lines
42-64 that the conductor is useful as an electrode for electric discharge machining. He
further states that a dielectric fluid usually floods the gap between the electrode and the
work piece to help control the current and supply cooling. The Mustonen device is used
for cutting and welding underwater, mostly in the ocean. Ocean water is not a dielectric
(certainly not the type of dielectric typically used in EDM machining) and there is
nothing in the Mustonen disclosure to indicate that the water driving the hydraulic motor
would qualify as a dielectric as contemplated in the Donaldson disclosure.

Mustonen plus Donaldson
As described above, there is nothing in either Mustonen or Donaldson that suggest the
combination of the technologies described in those patents. Examiner has not suggested
any other prior art that suggest the combination and Applicants are not aware of any.
Furthermore, even if they were combined as pointed out in the present application the
result (as demonstrated by Applicants' experiments) would not avoid significant erosion
or produce an electrode that is better than the much less expensive graphite electrodes.
Applicants stated on page 3 of the specification:

"However, some significant erosion resulted from the flaking off of ceramic powders at
the outer surface of the copper infiltrated electrodes when the surface copper melted
during the cutting process. To minimize this problem, Applicants have modified the
ceramics in the compositions described in the '547 patent. In a preferred embodiment,
the metal content in the voids in the ceramic matrix is reduced from at least 70% to
between 10% and 30%. In another preferred embodiment ceramic fibers are used in
place of ceramic powders. In a third preferred embodiment ceramic wires such as ZrB2
wires are utilized instead of the ZrB 2 powder. ZrB 2 wires are preferably prepared using a
chemical process to convert the Zr wires to ZrB 2 wires. Bundles of the ZrB 2 wires may
then be infiltrated with the copper."

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Thus, in conclusion, there in nothing in the prior art that would suggest the combination
of Mustonen and Donaldson and even if they were combined improvements not described
in either patent would be required to provide a better combination that the prior art
Mustonen and graphite electrodes. For the above reasons Applicants submit that
Mustonen and Donaldson do not teach underwater welding and cutting with the claimed
torch-electrode combination as presently claimed.

The Examiner in his summary sheet objected to the drawing but did not give his reason
for doing so. Applicants suspect that Examiner felt the drawing should be identified as
prior art since it is the same as the drawing in Mustonen. Applicants have therefore
modified the drawing to indicate that it is a prior art drawing.

Thus, for all the reasons given above; this application as the claims are presently limited,
define a novel, patentable, and truly valuable invention. Hence allowance of all of the
outstanding claims of this application is respectfully submitted to be proper and is
respectfully solicited.

Respectfully Submitted,

John R. Ross,
Ross Patent Law Office
Regis. No. 30,530
PO Box 2138
Del Mar, CA 92014
Phone: 858-755-3122
Fax: 858-755-3122

DRAWINGS

CONCLUSION

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